Supreme Court Order on Limitation is not applicable to the Notice of Opposition as per the CGPDTM office? But the Delhi HC says it is applicable

The #IP office of India(#CGPDTM), in wilful disobedience of the?Hon'ble #SupremeCourt order dated 23/09/2021, does not permit filing of Notice of Opposition although the same is well within the Limitation period in accordance with the?Hon'ble Supreme Court order dated 23/09/2021.

Relevant extract of the public dt 3/10/2021 of the #Indian #IP office (copy of the same is seems to be removed from www.IPIndia.nic.in, please refer comments session for a link of the said notice) is as under:

Reply dated 01/12/2021 from the Controler General(#CG) office:

"It is further to inform you that the office is fully complying the direction of the Supreme Court with regard to extension of timeline and restoration of order dated 23/02/2020. It may further be noted that the Hon’ble Court has observed vide order dated 23/03/2020 that:

“This Court has taken Suo Motu cognizance of the situation arising out of the challenge faced by the country on account of Covid-19 Virus and resultant difficulties that may be faced by litigants across the country in filing their Petitions / applications / suits / appeals /all other proceedings within the period of limitation prescribed under the general law of limitation or under Special Laws (both Central and/or State).

To obviate such difficulties and to ensure that lawyers/litigants do not have to come physically to file such proceedings in respective Courts/Tribunals across the country including this Court, it is hereby ordered that a period of limitation in all such proceedings, irrespective of the limitation prescribed under the general law or Special Laws whether condonable or not shall stand extended w.e.f. 15th March 2020 till further order/s to be passed by this Court in present proceedings.”

From the observation it may be noted that time line extended for litigants keeping view of constraint faced by them.

It further to inform you in this regards that:

• This office is fully complied with online processing and to submit opposition petition, no one required to visit TM office in person.
• Unless application opposed, there is only one party or litigant is on record, and Registrar of Trade Marks has no authority to stop the issuance to registration certificate (i.e. statutory right of an application to get the same from the Registrar) in the matter after expiry of the prescribed period unless opposed.
• In view of the Court Order wherever opposition filed, Office has not taken any adverse decision for not filing counter statement, evidences, reply for pending compliances from the parties concerned, etc as they qualified to be litigants in term of the order of the Hon’ble Supreme Court.?
• In these circumstances the Registrar is obliged by the law to issue Registration Certificate to concerned applicant(s) unless duly opposed.?
• It is further to draw your attention towards the provision of Trade Marks Act, 1999, which prescribed the procedure for cancellation of TM and application for cancellation of registrations may be filed, if so desired."

My response to the CG Office:

The CG office had provided the extract?of the Hon'ble Supreme Court order dated?23/03/2020, which was considered?by the Hon'ble Delhi High Court in W. P. (C) No. 3059/2020 Intellectual Property Attorneys Association (IPAA) and anr vs The Controller General of Patents, Designs and Trademarks and anr (please refer comments session for a link of the said order). The relevant para nos. 13 and 14 of the order are appended herewith.

13. In the wake of the pandemic Covid-19, Supreme Court took Suo Moto cognizance of the difficulties and challenges faced by litigants in filing petitions/appeals /suits and other proceedings within the timelines laid down by various Statutes and passed an Order on 23.03.2020 extending the limitation prescribed under the General Law or the Special Law. Relevant part of the order reads as under:-

“This Court has taken Suo Motu cognizance of the situation arising out of the challenge faced by the country on account of Covid-19 Virus and resultant difficulties that may be faced by litigants across the country in filing their petitions/applications/suits/ appeals/all other proceedings within the period of limitation prescribed under the general law of limitation or under Special Laws (both Central and/or State)To obviate such difficulties and to ensure that lawyers/litigants do not have to come physically to file such proceedings in respective Courts/Tribunals across the country including this Court, it is hereby ordered that a period of limitation in all such proceedings, irrespective of the limitation prescribed under the general law or Special Laws whether condonable or not shall stand extended w.e.f. 15th March 2020 till further order/s to be passed by this Court in present proceedings.”??

The Hon'ble Delhi High Court observers that:

?14. Plain reading of the order dated 23.03.2020 makes it clear that the Supreme Court has extended the periods of Limitation in respective proceedings, irrespective of the Limitation period prescribed under the General Law or any Special Statute and the extension is to continue until further orders passed by the Court in the said petition. It is thus not open to any Court, Tribunal or Authority to impose timelines on the Limitation period, even if it is prescribed under a Special Statute. The order of the Supreme Court is as much binding on Respondent No.1 as on any other Court or Tribunal. It is not understood what prompted Respondent No.1 to issue the impugned Public Notice in the backdrop of the order dated 23.03.2020 as also order dated 11.05.2020 passed by this Court suspending the operation of its earlier Notice dated 04.05.2020, issued on similar lines.??

In light of the above, it is not open to our IP office to stop the period of limitation in respect of filing Notice of Opposition. This shall be considered as wilful disobedience of the Hon'ble Supreme Court order dated 23/03/2020 and the Hon'ble Delhi High Court order dated 21/05/2020.

Our IP office should have mentioned in their notice dated 3/10/2021 that the period for filing the Notice of Opposition is not included as per the Hon'ble Supreme Court order. This is our IP official position. But they failed to mention it for reasons best known to them. Now, the said notice is not available on www.IPIndia.nic.in site (please refer comments session for a link of the said notice).

Is proceeding under notice of opposition not covered under para?I. of the #SupremeCourt order "any suit, appeal, application or proceeding"??The #SupremeCour had not excluded?proceeding under notice of opposition from para l.

Section 21 in The Trade Marks Act, 1999

21. Opposition to registration.—

(1) ?Any person may, within three months from the date of the advertisement or re-advertisement of an application for registration or within such further period, not exceeding one month in the aggregate, as the Registrar, on application made to him in the prescribed manner and on payment of the prescribed fee, allows, give notice in writing in the prescribed manner to the Registrar, of opposition to the registration.

Our IP office should have communicated their view/positions clearly and openly to its #stakeholders. I failed to understand why our?IP?office had not mentioned this position in their notice online/offline? why our IP office?choose to communicate to associations rather than its #stakeholder directly (by notice)? Why this position is not explained to its own office officials (HO was not aware of this notice).

Additional reply dated 27/12/2021 from the CG office:

"Official response is already given to you over the issue on 01/12/2021. This office has nothing more to say in this regard."

Telephonic update (27/12/2021) from Mr. S. K. Banerjee, the Principal Secretary of the CG:

The CG Sir had taken the issue seriously and discussed it with the IP professional on?27-12-2021. Further, he will discuss it on 28-12-2021 with somebody (may be govt. legal officer).

Till date no update I have received from Mr. Banerjee despite of various calls.

Updates (11-01-2022)

The Hon'ble Supreme Court order dated 23-10-2021 (https://main.sci.gov.in/supremecourt/2021/10651/10651_2021_31_301_30354_Order_23-Sep-2021.pdf)

"8. Therefore, we dispose of the M.A. No.665 of 2021 with the following directions:

-I. In computing the period of limitation for any suit, appeal, application or proceeding, the period from 15.03.2020 till 02.10.2021 shall stand excluded. Consequently, the balance period of limitation remaining as on 15.03.2021, if any, shall become available with effect from 03.10.2021."

The Hon'ble Supreme Court order dated 10-01-2022 (https://www.livelaw.in/pdf_upload/in-re-cognizance-for-extension-of-limitation-407348.pdf)

"5. Taking into consideration the arguments advanced by learned counsel and the impact of the surge of the virus on public health and adversities faced by litigants in the prevailing conditions, we deem it appropriate to dispose of the M.A. No. 21 of 2022 with the following directions:

I. The order dated 23.03.2020 is restored and in continuation of the subsequent orders dated 08.03.2021, 27.04.2021 and?23.09.2021,?it??is??directed??that??the??period from 15.03.2020 till 28.02.2022 shall stand excluded for the purposes of limitation as may be prescribed under any general or special laws in respect of all judicial or quasi-judicial proceedings.

II. Consequently, the balance period of limitation remaining as on 03.10.2021, if any, shall become available with effect from 01.03.2022."

In the recent order dated 10-01-2022, the Hon'ble Supreme Court had added "for the purposes of limitation as may be prescribed under any general or special laws in respect of all judicial or quasi-judicial proceedings." to avoid possible confusion about what needs to be excluded.

In light of the above, Notice of Opposition is the quasi-judicial proceedings and the CGPDTM have no right to curtail the limitation excluded by the Supreme Court.

Update (18-01-2022):

Public Notice dated 18.01.2022 with respect to extension of period of limitation along with its enclosures

Relevant para of the above notice:

5. Taking into consideration the arguments advanced by learned counsel and the impact of the surge of the virus on public health and adversities faced by litigants in the prevailing conditions, we deem it appropriate to dispose of the M.A. No. 21 of 2022 with the following directions:

I. The order dated 23.03.2020 is restored and in continuation of the subsequent orders dated 08.03.2021, 27.04.2021 and 23.09.2021, it is directed that the period from 15.03.2020 till 28.02.2022 shall stand excluded for the purposes of limitation as may be prescribed under any general or special laws in respect of all judicial or quasi-judicial proceedings.

II. Consequently, the balance period of limitation remaining as on 03.10.2021, if any, shall become available with effect from 01.03.2022.

III. In cases where the limitation would have expired during the period between 15.03.2020 till 28.02.2022, notwithstanding the actual balance period of limitation remaining, all persons shall have a limitation period of 90 days from 01.03.2022. In the event the actual balance period of limitation remaining, with effect from 01.03.2022 is greater than 90 days, that longer period shall apply….”

It is accordingly notified to all the concerned stakeholders/litigants that the period of limitation shall be computed in accordance with the afore-cited order dated 10.01.2022 (enclosed) passed by the Hon’ble Supreme Court of India.

But till date, the office of CGPDTM consider that the order of Hon'ble Supreme Court is not applicable to filing of notice of opposition.

Update - February 1, 2022

WP (C) 1907/2022 Soumya Joshi v Registrar of TM filed in #DelhiHC for not accepting notice of opposition beyond 4 months during applicability of #SC ' s directions.

Update - March 26, 2022

Various emails to Shri Piyush Goyalji, Hon'ble Commerce Minister, Commerce Ministry; Shri Somparkashji, MOS; Law Ministry, various officials of DPIIT, Smt. Shruit Singhji, Shri Sachin Dhaniaji, Shri Nitesh Ranjanji ,?Shri Rajendra Ratnooji the Controller General.?

Extract of emailed dated February 1, 2022

WP (C) 1907/2022 Soumya Joshi v Registrar of TM filed in the Delhi High for not accepting notice of opposition beyond 4 months during applicability of the Supreme Court's order on limitation.?

You could have avoided this litigation.?

Extract of email dated March 21, 2022

I understand that today,?the Delhi High Court in WP (C) 1907/2022 Soumya Joshi v Registrar of TM held that the orders of suspension of limitations also apply to filing of the oppositions in the TM Office. I understand three write petitions were clubbed together.?

Unfortunately, you have failed to act in time to avoid these litigations....?

Relevant para of the Hon'ble Delhi High Court's order dated March 21, 2022

18....

(iv) In so far as other trademarks advertised during the pandemic are concerned, the advertised application in respect of which the four month limitation period would have expired after 15th March, 2020, the limitation period in terms of the orders of the Supreme Court shall be extended for filing oppositions to the said applications, until the expiry of 90 days from 1st March, 2022, i.e. till 30th May, 2022. Compliance of this direction shall be ensured by the respective Controllers incharge of Oppositions across the five offices of CGPDTM, in case any emails are received by prospective opponents/ their agents/ counsels who wish to file oppositions. During this period, if any email is received by the CGPDTM from the opponents/their agents/counsels, the office of the CGPDTM shall enable the said opposition to be filed either through online mechanism or through physical filing. Upon filing of oppositions, the status of the trademark application shall be reflected appropriately on the portal within 48 hours.

(v) Insofar as trademark registration certificates which may have been issued during the pandemic period, the registration certificates shall be dealt with in the following manner:

(a) In respect of the trademark applications in which no oppositions have been already filed or are received till 30th May, 2022, the said registration certificates shall remain valid and the said applicants shall enjoy their statutory rights in accordance with law.

(b) In respect of those trademark applications where oppositions have already been filed or are filed by 30th May, 2022, the registration certificates shall either not be issued or if already issued, the same shall stand suspended till the oppositions are decided by the office of the CGPDTM.

(vi) In future, whenever emails concerning oppositions are received by the Opposition Section, CGPDTM, the concerned Controller in-charge shall first, ensure that such emails are replied to within a reasonable time, not later than three working days and second, that proper instructions are given by them to the section issuing registration certificates at the CGPDTM/ concerned officials in the Mumbai office, depending upon the correspondence received, so that certificates are not issued while issues relating to opposing the trademark are being raised with the office of the CGPDTM.

Order is available at https://www.livelaw.in/pdf_upload/tm-412942.pdf